Article by Adhip Ray, consultant at PatentPC.
Do you have a tech business? Well, then surely your tech startup is inventing stuff and patenting them.
It’s one of the most important legal matters that most startups need to consider after they set up shop. That’s because, once you invest thousands (or even millions) of dollars to invent something that revolutionizes your business, you don’t want someone to just come over and steal your invention and sell it making a fortune off your hard work.
And good news, they can’t – provided, you have patented your invention in the local jurisdictions wherein you intend to market your product.
Now patenting is in fact a difficult thing to do. While it is suggested you take the help of a patent lawyer, some entrepreneurs are brave enough to risk it all and do it themselves.
That said, we asked several entrepreneurs how they got their own patents done. And the answers we received were quite interesting. Before you begin your patent journey, you may want to learn more from the experiences of these several entrepreneurs like you.
#1. Patenting Your Invention Can Take Quite a Long Time, So Take the Best Help Possible!
Patenting is not easy. It’s one of the hardest things new entrepreneurs encounter.
“When pursuing a patent starting in Jan. 2012, I had NO intention of starting a business. As typical of most inventor stories beginnings, my invention solves a problem I had, and not finding a solution in a large overall market, decided to pursue a patent and planned to license it if successful.
Thankfully, I knew going in, that obtaining a patent can be an expensive process, [and] so chose to work with a patent agent versus a patent attorney; so glad I did!
After conducting my own USPTO search, two professional patent searches, an additional search by my patent agent, filing a provisional patent in 2012, a full utility patent (in early 2013 under ‘First to Invent rules), waiting almost 2 years before receiving first office action (apparatus), filing a CIP (Continuation In Part), another office action (method), various phone meetings with Senior/Junior Patent examiners, a rejection, a USPTO Appeals Board review, and 8+ years later, I finally was issued the patent on February 25th, 2020!! Needless to say, working 8+ years to get a patent issued is not typical—or recommended!”
#2. Patenting Your Invention Can Get You in the Cross-Hair of Litigious Individuals
Getting your patents opposed is a normal thing. But at times, if the technology is good, it can come into the crosshairs of large MNCs or even individuals who simply want to get the patent invalidated so that they can use it for their own products for free.
Here’s what happened to Lori Cheek, Founder/ CEO of Cheekd –
“I’m an architect by training that one day had a light bulb moment. This moment led me to leave my safe and secure $120,000 per year job and career to build an online dating business I called Cheekd. When I launched in May of 2010, I “did it right” by putting the trademarks, technology, and patents in place to ensure I was protected. I also had partners and strategists, not to mention my own grit and passion as a foundation.
One of the greatest opportunities of my life came when I had the chance to pitch my startup Cheekd on an episode of Shark Tank. But that day has also put me in the cross hairs of someone who watched a re-airing of that episode in July 2015.
Two years later, that same individual named me in a $1 million lawsuit that claimed he “invented” the idea behind my company, while also accusing his former therapist in the same lawsuit of sharing his alleged invention with me.
The catch is that the therapist and I have never met and had never spoken and did not know of each other until this lawsuit.
And despite this fact – and despite my having conceived of and commenced building the business before he even began treatment with the above-referenced therapist – it took over 10 months and $50,000 to get the case in front of a judge who dismissed the lawsuit in a pre-trial conference on April 5, 2018.
Back? Well here’s where it gets crazier. Because without reproach, the same individual whose case had already been thrown out less than one year ago, has now tendered a second lawsuit against me containing the same allegations! Such is the Kafka-esque world that I’ve found myself thrust into.
So like a terrible movie that keeps generating sequels no one ever asked for, he came back. This time, the stakes skyrocketed into a brand new $5 million lawsuit against myself, my business, and the therapist. The suit also requested the inventor’s rights to my patent! Further, he asked not only for a “cease and desist” order for Cheekd but also for our startup business spinoff Networkd, a Bluetooth networking app.
Fortunately, the judge dismissed the $5 million claims, but I was still forced to fight the inventor rights issue. I found myself again fighting to protect all that I have created over the past 12 years by spending nearly $150,000 that I do not have in order to save what is mine.
After nearly 2 years and 7 months of defending my idea, my business, and my patent in 2 back to back lawsuits, on December 23rd, 2019, Honorable Judge Englemayer directed the Federal Court of NY to enter judgment for the defendants (ME!) and to “close this case” as “no reasonable juror could find that he is entitled to be listed as a joint inventor.”
After a series of procedurally complex twists and turns that resulted in an agreement by the plaintiff to not oppose the defendants’ motion for summary judgment, U.S. District Judge Paul A. Engelmayer (S.D.N.Y.) granted defendants Lori Cheek (me) and Cheek’d Inc.’s motion for attorney fees under 35 U.S.C. § 285 and ruled that plaintiff’s counsel should pay.
On May 26, 2020, the defendants submitted their fee application seeking $17,000 for fees and the judge granted us these fees. Unfortunately, the plaintiff’s counsel had appealed the judge’s decision. Ultimately, this could take another year and cost another $17K to fight off the $17K this lawyer’s meant to pay back.
The story gets a little crazier because the plaintiff sued me a 3rd time for going to the press while trying to bring light to what was happening. This was in hopes of trying to get my story in front of anyone that could help financially or legally. He sued me a 3rd time for defamation and all sorts of other claims in a $10Million lawsuit.
His current lawyer dismissed the lawsuit without prejudice, which means the plaintiff can try again. I’ve done everything in my power to keep my business afloat over the last decade. However, I just can’t see the light at the end of the tunnel fighting this battle with a complete and total stranger who I still have no idea what they look like to this day.
Last spring, this lawsuit came to an end— after almost four years. The lawyer had to pay me a small portion of my legal fees for ‘vexatious conduct’ in the end. I’m still out over $100K in the end but it’s over and I can begin to rebuild now.”
#3. Be Sure to Do a Preliminary Research before Filing Your Patent
So many patents fail because the inventor failed to do their research before filing their patents. However, Athalia Monae, Founder of Pouches by ALAHTA didn’t fall into committing that mistake.
In fact, she did two-step research before filing for a patent – once herself and once by her patent lawyer. “I patented what I call the ALAHTA hairbrush. The process was not difficult. First, I conducted thorough research to make sure my idea didn’t already exist. Then, on hiring a patent attorney, he explained that they do research on behalf of clients before filing the patent application, which pleased me because I was afraid. I might have missed something during my research. Fortunately, I didn’t.”
#4. Be Sure to Hire Trustworthy Patent Lawyers Who Have Good Reputation and Branding
Let’s face it. You are spending a ton of your hard-earned money when you go for a patent. Plus, your entire business depends on getting your invention successfully patented because, without that, you can not commercialize your invention.
That’s why it is key that you hire a very reputable and trustworthy patent lawyer.
In fact, Athalia Monae had a poor experience when she tried to find a good patent lawyer to help her through her journey.
She states – “I hired a patent attorney early on in my journey to file a patent application for my design. After not receiving any communication from him a month after hiring and paying him in full, I first contacted him by phone and left a voicemail, stating – I’m calling to check the status of my case.
A week after not receiving a response, I emailed him. He never followed up after that either. I went through a few other channels before successfully connecting with him, which was a month after I initially reached out to him. As anyone would be, I was frustrated.”
#5. Consider Your Pros and Cons Before Heading for a Patent for Your Invention
Here’s why he thinks you need to take time to consider the decision –
“Making the decision to invest the time and resources into a patent is a critical strategic consideration for any company focused on innovation. The patent application process is complex and expensive and there is no guarantee of success. You also have to consider if your company has the resources to defend your patent if/when it is challenged by a competitor. Challenging a well-funded intellectual property infringement often takes more capital than many start-ups have. Also, foreign competitors like China can easily make small changes to your product and sell with virtual immunity on Amazon and other online channels. That said, there are three very good reasons to consider the effort and the investment.
A well-crafted patent can:
- Create significant company value by establishing your company/product as the original claim to future opportunities and threats.
- Deter other competitors from entering the market
- Create greater acquisition value for your company
Ultimately, we believe that a patent is worth the effort if you have a valuable, truly innovative product. In addition, a product that is hard to copy and hard to easily market and distribute via online channels like Amazon, etc. If your product does not meet those criteria, we recommend focusing on brand building, Sales/Marketing, and speed to market instead of a patent. And cross your fingers!”
To make this decision, you can even take professional guidance. Either way, it is important you give this decision a deep thought instead of just jumping into the fray.
That’s it. Hope you found the piece insightful. If you have any thoughts, do leave them in the comments and if you have any questions, don’t hesitate to contact us. We will get back to you and guide you through your patent journey.